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Genetic Veterinary Services v. Laboklin

Representative Claim(s)

1. An in vitro method for genotyping a Labrador Retriever comprising:
a) obtaining a biological sample from the Labrador Retriever;
b) genotyping a SUV39H2 gene encoding the polypeptide of SEQ ID NO: 1 and
c) detecting the presence of a replacement of a nucleotide T with a nucleotide G at position 972 of SEQ ID NO: 2.

Posture:

Appeal from decision of the District Court

Exception Category: Natural Phenomenon

The ’114 patent generally relates to in vitro methods for genotyping Labra-dor Retrievers, in order to discover whether the dog might be a genetic carrier of the disease HNPK.

“The District Court held that the Asserted Claims, both individually and in combination, are ‘directed to patent ineligible subject matter, namely the discovery of the genetic mutation that is linked to HNPK.” [Citation omitted.] Appellants argue that the Asserted Claims ‘are directed to a patent-eligible application’ of the discovery of the ‘underlying natural phenomenon’ because the Asserted Claims ‘claim a man-made laboratory procedure.’ ”

“Here, the Asserted Claims are not directed to a new and useful method for discovery because they begin and end with the point discovery of the HNPK mutation in the SUV39H2 gene.”

“[C]laim 1 simply states that the search for the mutation involves the laboratory examination of Labrador Retriever DNA, which resulted in the revelation of the mutation. [Citation omitted.] The mutation location itself and the fact that it is inherited through male and female dog carriers mating are both natural phenomena. … Taken together, the plain language of claim 1 demonstrates that it is directed to nothing more than ‘observing or identifying’ the natural phenomenon of a mutation in the SUV39H2 gene.”

Significantly More: No

“The Asserted Claims do not recite an inventive concept that transforms the observation of a natural phenomenon into a patentable invention. Nothing in claim 1’s language suggests the invention of a new method for genotyping. … Rather, instructive to our analysis is that LABOKLIN’s expert agreed that the genotyping method in claim 1 uses conventional or known laboratory techniques to observe the newly discovered mutation in the SUV39H2 at position 972. … Conducting conventional detection in a laboratory does not transform the discovery of a natural phenomenon into patent eligible subject matter.”